Mogul, Inc.

Trademark Trial and Appeal Board

Sep 6, 2018

No. 86870198 (T.T.A.B. Sep. 6, 2018)

Mailed: September 6, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
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In re Mogul, Inc.
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Serial Nos. 86870198 and 86877482
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Mogul, Inc., pro se.

Jeffrey Chery, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
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Before Ritchie, Kuczma and Adlin,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Applicant Mogul, Inc., appearing pro se, filed applications to register the mark
MOGUL, in standard character and stylized forms for the International Class 41
services indicated below:
MOGUL in standard characters for “Education services,
namely, providing on-line courses in the field of
educational and career development, health and fitness,
financial management, relationships, cooking and global
cuisine, and travel; Providing a website featuring blogs and
non-downloadable publications in the nature of user-
generated articles in the field(s) of news, women's issues,
and women's empowerment; Providing a website featuring
non-downloadable articles in the field of news, women's
issues, and women's empowerment; Providing on-line non-
downloadable articles in the field of news, women's issues,
and women's empowerment;”1 and

1 Application Serial No. 86870198 (the “‘198 Application”), filed January 8, 2016 under
Section 1(a) of the Trademark Act.
This Opinion is Not a
Precedent of the TTAB
Serial Nos. 86870198 and 86877482
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for “Education services, namely, providing on-
line courses in the field of educational and career
development, health and fitness, financial management,
relationships, cooking and global cuisine, and travel;
Providing on-line non-downloadable articles in the field of
news, women's issues, and women's empowerment;
Providing a website featuring blogs and non-downloadable
publications in the nature of user-generated articles in the
field(s) of news, women; Providing a website featuring non-
downloadable articles in the field of news, women.”2

The Examining Attorney refused registration of both marks under Section 2(d) of the
Trademark Act on the ground that Applicant’s marks so resemble the following two
marks registered by different owners in International Class 41 that use of Applicant’s
marks in connection with Applicant’s services is likely to cause confusion:
MOGUL, in standard characters, for “Arranging and
conducting business seminars in the field of investment
and finance; Conducting workshops and seminars in
investment and finance; Education in the field of
investment and finance rendered through video
conference; Education services, namely, providing on-line
webinars, webcasts, one-on-one training, lectures,
instructional videos, video conferences, online-training in
the field of investment and finance; Educational services,
namely, conducting conferences, webinars, webcasts, one-
on-one training, lectures, instructional videos, video
conferences, on-line training and seminars in the field of
investment and finance and distribution of printed
materials in connection therewith in hard copy or
electronic format on the same topics; Entertainment and
education services in the nature of a series of short shows
featuring investment and finance distributed to mobile
handsets, which may include video, text, photos,
illustrations or hypertext; On-line electronic newsletters
delivered by e-mail in the field of investment and finance;

2 Application Serial No. 86877482 (the “‘482 Application”), filed January 15, 2016 under
Section 1(a) of the Act.
Serial Nos. 86870198 and 86877482
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On-line journals, namely, blogs featuring investment and
finance; Providing newsletters in the field of investment
and finance via e-mail; Providing on-line newsletters in the
field of investment and finance; Providing on-line training
courses, seminars, instructional videos, video conferences
and workshops in the field of investment and finance;
Social club services, namely, arranging, organizing, and
hosting social events, get-togethers, and parties for club
members;”3 and

for “Entertainment in the nature of providing
an informational and entertainment website in the fields
of celebrity gossip, entertainment, sports and fitness;
Entertainment in the nature of television news shows;
Entertainment information; Entertainment services in the
nature of an ongoing reality based television program;
Entertainment services in the nature of development,
creation, production and post-production services of
multimedia entertainment content; Entertainment
services in the nature of recording, production and post-
production services in the field of music; Entertainment
services, namely, multimedia production services;
Entertainment, namely, production of television shows,
films, music, Internet content in the nature of motion
picture films, television series, music videos;
Entertainment, namely, television news shows;
Multimedia entertainment services in the nature of
development, production and post-production services in
the fields of video and films; Multimedia entertainment
services in the nature of recording, production and post-
production services in the fields of music, video, and films;
Production of DVDs featuring films, television programs,
music performances, live or pre-recorded; Production of
DVDs, videotapes and television programs featuring films,
music performances, live or pre-recorded; Providing a
website featuring entertainment information; Providing
entertainment information via a website.”4

3 Registration No. 4140069 (the “‘069 Registration”), issued May 8, 2012.
4 Registration No. 4530879 (the “‘879 Registration”), issued May 13, 2014. The registration
includes this description of the mark: “The mark consists of the wording ‘MOGUL’ in which
the letter ‘M’ is red and the letters ‘OGUL’ are white. The entire mark appears on a black
background.”
Serial Nos. 86870198 and 86877482
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After the refusals became final, Applicant appealed and filed requests for
reconsideration which were denied. Applicant and the Examining Attorney filed
briefs.
I. Appeals Consolidated
These appeals involve common questions of law and fact and the records are
similar. Accordingly, we consolidate and decide both appeals in this single decision.
See In re Binion, 93 USPQ2d 1531, 1533 (TTAB 2009); TBMP § 1214 (2015).5
II. Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth
factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential characteristics of the goods and
differences in the marks.”).6

5 Citations are to the record in the ‘198 Application.
6 The Examining Attorney’s objection to evidence Applicant submitted for the first time with
its Appeal Brief is sustained, because the evidence is untimely. Trademark Rule 2.142(d). In
addition, Applicant’s statement in its Appeal Brief that it is “willing” to amend its
identification of services is untimely, and will be given no consideration. In re Faucher Indus.
Inc., 107 USPQ2d 1355, 1357-58 (TTAB 2013) (“the Board cannot … re-open the application
Serial Nos. 86870198 and 86877482
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A. The Marks
Applicant’s marks are either identical, legally identical or highly similar to the
cited marks “in their entireties as to appearance, sound, connotation and commercial
impression.” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177
USPQ at 567). Indeed, Applicant’s standard character mark is identical to the
standard character mark in the ‘069 Registration. And it is highly similar to the mark
in the ‘879 Registration, because the design elements of the mark in the ‘879
Registration do not significantly change its visual or commercial impression, as they
consist merely of a black rectangular background, and a red “M” followed by “OGUL”
in white letters. Here, as is often the case, the word MOGUL is the dominant element
of the ‘879 Registration. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911
(Fed. Cir. 2012) (“the verbal portion of a word and design mark likely will be the
dominant portion”); In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB
1987) (holding that “if one of the marks comprises both a word and a design, then the
word is normally accorded greater weight because it would be used by purchasers to
request the goods or services” and “because applicant’s mark shares with registrant’s
mark that element responsible for creating its overall commercial impression, the
marks are confusingly similar”).
Applicant’s stylized mark in the ‘482 Application is legally identical to the cited
standard character mark in the ‘069 Registration. In fact, Registrant could display

for amendment of the identification by applicant”).
Serial Nos. 86870198 and 86877482
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its standard character mark in the ‘069 Registration in any lettering style, color or
font, including in the same font and style as Applicant displays its mark, heightening
the likelihood of confusion. In re Viterra, 101 USPQ2d at 1909; Citigroup Inc. v.
Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir.
2011); In re Strategic Partners Inc., 102 USPQ2d 1397, 1399 (TTAB 2012). See also
In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017)
(“Symbolic does not, and cannot, dispute that the mark, I AM in standard character
form, and the registrants’ marks, I AM in standard character, typed, or stylized form,
are pronounced the same way and, at a minimum, legally identical.”); SquirtCo v.
Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (“[T]he argument
concerning a difference in type style is not viable where one party asserts rights in
no particular display. By presenting its mark merely in a typed drawing, a difference
cannot legally be asserted by that party.”).
While there are more differences between the stylized mark in the ‘482
Application and the design mark in the cited ‘879 Registration, these marks are still
quite similar. In fact, the dominant portion responsible for creating the overall
commercial impression of both marks is the identical literal term MOGUL. Neither
Applicant’s minor stylization nor Registrant’s relatively insignificant black
rectangular background and red “M” followed by a white “OGUL” is enough to
distinguish the marks because consumers will use the word MOGUL to call for the
services offered by Applicant or Registrant. Moreover, the stylized depictions of the
identical term MOGUL in Applicant’s ‘482 Application and the cited ‘879 Registration
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are somewhat similar. In fact, consumers familiar with the mark in the ‘879
Registration who encounter Applicant’s stylized mark in the ‘482 Application may
very well perceive it to be a variation of Registrant’s mark.
Because each of Applicant’s marks is identical, legally identical or highly similar
to each of the cited marks, this factor weighs heavily in favor of finding a likelihood
of confusion.
B. The Services, Channels of Trade and Classes of Consumers
Applicant strenuously argues that the services it currently offers in the
marketplace, and the channels of trade and consumers therefor, are different than
the services actually offered by either Registrant, and the channels of trade and
classes of consumers therefor. The problem with this argument is that we must focus
on Applicant’s and Registrants’ identifications of services in the involved applications
and cited registrations. In fact, we must focus on Applicant’s and Registrants’
identifications of services
regardless of what the record may reveal as to the
particular nature of [Applicant’s or Registrants’ services],
the particular channels of trade or the class of purchasers
to which sales of the [services] are directed. Even assuming
there is no overlap between [Applicant’s] and [Registrants’]
current customers, the Board correctly declined to look
beyond the application and registered marks at issue. An
application with “no restriction on trade channels” cannot
be “narrowed by testimony that the applicant’s use is, in
fact, restricted to a particular class of purchasers.”

Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1162 (Fed. Cir. 2014) (quoting Octocom, 16 USPQ2d at 1787).
Serial Nos. 86870198 and 86877482
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Here, Applicant identifies “education services, namely, providing on-line courses
in the field of … financial management” in both its ‘198 Application and its ‘482
Application. These services are essentially encompassed by the “business seminars,”
“workshops and seminars” and “on-line webinars, webcasts … lectures … on-line
training and seminars” all in the “field of investment and finance,” which are
identified in the cited ‘069 Registration. Indeed, the field of “investment and finance”
is broad enough to include “financial management,” and Registrant’s “seminars,”
“workshops,” “webinars” and “on-line training” are broad enough to encompass
Applicant’s “on-line courses.” Therefore, the services in the involved applications are
legally identical to those in the cited ‘069 Registration. Because these services are
legally identical, we must presume that the channels of trade and classes of
purchasers for those services are also the same. See In re Viterra, 101 USPQ2d at
1908 (even though there was no evidence regarding channels of trade and classes of
consumers, the Board was entitled to rely on this legal presumption in determining
likelihood of confusion); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721,
723 (CCPA 1968) (where there are identical goods, the channels of trade and classes
of purchasers are also the same).7
Turning to the cited ‘879 Registration, its identification of services includes
“entertainment, namely, television news shows,” while the involved ‘198 and ‘482

7 In addition, the Examining Attorney introduced evidence that the American Management
Association, Certified Financial Accountant Institute and Harvard University offer online
and other seminars in the fields of financial management, investment and finance. Office
Action of May 30, 2017 (evidence from “amanet.org,” the CFA Institute and Harvard
University).
Serial Nos. 86870198 and 86877482
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Applications both identify “providing a website featuring non-downloadable articles
in the field of news …” and “providing on-line non-downloadable articles in the field
of news ….” The Examining Attorney has introduced evidence that these services are
related. For example, NBC News offers television news shows, such as “NBC Nightly
News with Lester Holt,” and a website featuring news articles. Denial of Request for
Reconsideration of December 22, 2017 (printouts from “nbcnews.com”). ABC News
also offers television news programs, such as “World News Tonight with David Muir,”
and a website featuring news articles. Office Action of May 30, 2017 (printouts from
“abcnews.com”). Similarly, Entertainment Tonight is a television news program
featuring entertainment news, and the same source as the television news program
also provides a website featuring entertainment news articles and newsletters.
Denial of Request for Reconsideration of December 22, 2017 (printout from
“etonline.com”). Finally, CNN offers a wide variety of television news shows, as well
as a wide variety of news articles on its website, and E! offers entertainment news
television programs and, on its website, entertainment news articles. Office Action of
April 27, 2016 (printouts from “cnn.com” and “eonline.com”).
This evidence establishes a relationship between the services identified in the ‘198
and ‘482 Applications and the cited ‘879 Registration. It also establishes not only that
these services travel in the same channels of trade – including Internet websites
which feature online articles and television news programs – but also that the sources
of these services promote their television news programs on the same websites as
Serial Nos. 86870198 and 86877482
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they offer online news articles. These factors also weigh in favor of finding a likelihood
of confusion.8
III. Conclusion
Because the marks are either identical, legally identical or highly similar, the
services are at least related and the channels of trade and classes of consumers
overlap, there is a likelihood of confusion between the marks in Applicant’s ‘198 and
‘482 Applications and the marks in the cited ‘069 and ‘879 Registrations.

Decision: The Section 2(d) refusals to register Applicant’s marks are each affirmed.

8 Applicant cites a number of federal court infringement cases in support of its claim that
confusion is unlikely. The cited cases are inapposite, as the decisions are based on records,
facts and evidence specific to those cases, rather than the record and governing law in this
case. The only Federal Circuit case upon which Applicant relies, In re Coors Brewing Co., 343
F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003), is also inapposite. There, the Court restated its
predecessor court’s prior holding in Jacobs v. Int’l Multifoods Corp., 668 F.2d 1234, 212 USPQ
641 (CCPA 1982), that “something more” is required to establish a relationship between
restaurant services and food and beverage products than the mere fact that restaurants serve
food and beverages. That holding is irrelevant here, because this case involves completely
different services.